When authors and musicians grant movie and television rights to use their works, it is considered to be an emblem of their success, as they receive not only monetary gain but a big assist to their fame. As much as the artists agree to assignments of certain rights in the present, they must also anticipate how those rights could benefit them in the future. A contract that assigns all copyrights to a work without any reservation of rights by the artist could cut him or her out of a lucrative payday for products created from their original work in formats and on platforms that were not invented at the time of the assignment. Contracts granted in the 1960s by Mario Puzo for rights to use his book “The Godfather”, and by James Brown for rights to use his performance on a 1965 television program called “The TAMI Show” both generated litigation over the language used.
On February 12, 2012, Paramount Pictures sued the family of the author of the original novel, “The Godfather”, Mario Puzo, for copyright and trademark infringement. Mr. Puzo had assigned his entire copyright to the novel to Paramount in 1969, granting them, among other rights, “any and all copyrights therein and all rights now known and hereafter accruing therein and thereto, forever and throughout the world, together with the sole and exclusive right to use said work, in whole or part, in whatever manner the Purchaser (i.e., Paramount) may desire including, but not limited to, the sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind and character of said work or any part or parts thereof and/or any or all of the characters created therein … [and] to adapt, arrange, change, interpolate in, transpose, add to and subtract from said work to such extent as the Purchaser, in its sole discretion, may desire in connection with any use which the Purchaser may make of said work.”[1] Mr. Puzo did not reserve any rights to The Godfather, except the right to publish the original novel in book form. He did not reserve the right to publish a sequel based on the characters in the first novel.
The entire movie going public knows what happened next: the movie made of the book “The Godfather” went on to become one of the most popular, famous and well loved films of all time, in fact being rated by the Film Institute of America as the third best movie of all time.[2] Not only did the movie become famous, but the stylized script of the name “The Godfather” used on the novel and all the movies has come to identify the Godfather movies and book, and Paramount registered both the name and the distinctive design used for the logo as trademarks in the U.S. Patent and Trademark Office, comprising no fewer than twelve different registrations, referred to by Paramount as the “Godfather Marks”.[3] These trademarks have been used on not only the book and movies, but on a range of products marketed around the world. It could be argued that the trademark owned by Paramount that sprang from the name of the original novel is as valuable, if not more valuable, than the copyright originally sold to them by Mario Puzo.
The complaint points out that Paramount maintained a good working relationship with Mr. Puzo during the making of the three Godfather movies, and also after his death, when in an attempt to “accommodate” the Puzo Estate Paramount entered into an agreement with the Estate granting it the right to publish one (but only one) Godfather sequel novel written by new authors. That agreement also recited the Estate’s contention that it had the right to publish subsequent novels, and that Paramount contended to the contrary. The Estate went ahead with the first sequel novel, entitled “The Godfather Returns”, which had success, and good sales, but then without Paramount’s knowledge or consent published another sequel novel,[4] which did not do well in sales and received “mediocre reviews” according to Paramount’s complaint. The family has a third sequel novel ready for release in May 2012, to be called “The Family Corleone”.
Paramount then filed suit not only for copyright infringement, as they have the sole right under copyright law to prepare derivative works of the first novel[5], but for trademark infringement claiming tarnishment and consumer confusion of the Godfather Marks,[6] which the Estate has used on the second sequel and planned to use on the third. Because of the claimed inferiority of the unauthorized sequels, Paramount says it has and will suffer damages from the Estate’s use of the Godfather Marks which is likely to cause confusion, mistake, or deception of the public as to the source of the books. The essence of trademark law is to identify the source of goods and to help bolster the goodwill and value of the brand. Having spent countless millions on the establishment of the Godfather brand and its connection to the beloved Godfather movies, Paramount had no intention of allowing the Puzo Estate to tarnish the “integrity of the Godfather franchise”.[7] A trademark being used as an identification of a movie series and products based on that series is a legitimate, though not always recognized, derivative use of the original grant of rights. The independent development of the Godfather marks by Paramount to identify its copyrighted works is a collateral right necessarily granted by the language of the original contract between Paramount and Puzo, which grants not only copyrights but “all rights now known or hereafter accruing therein” and also the exclusive rights to “use said work … in whatever manner the Purchaser may desire” including the right to use “any and all of the characters created therein”. The copyright includes the title of the work, and it is able to be registered for trademark because it identifies a series of movies, not just one, which is not able to be the subject of a trademark.[8]
The popularity of the Godfather movies, and the use Paramount made of its grant of rights, gave the owners of the intellectual property rights a very lucrative franchise which Paramount has every right to preserve and benefit from. The theory of the Puzo family estate is in direct opposition to the rights assigned and sold by their patriarch in 1969, and the language of the contract does not seem to give them a loophole in which to claim the right to create their unauthorized sequels. Paramount is claiming willful copyright and trademark infringement, and it remains to be seen how the Estate will counter that strong claim in light of the seemingly clear contract language. Mario Puzo sold the rights to everything that could possibly be created from his novel, in perpetuity, leaving nothing that could be invented later to be exploited by him and his family.
The situation was somewhat similar for the Godfather of Soul[9], James Brown, with his case against a film company for copyright infringement. In James Brown v. Twentieth Century Fox Film Corporation[10], Mr. Brown challenged the use of a clip from his performance on the 1965 television show in the 1991 move “The Commitments”. His letter agreement with the producers of the TAMI Show in 1965 was an employment contract which granted the producers sole and exclusive rights in the reproduction of his performance on the show. The contract included perpetual rights of exploitation of all parts of the performance including “all or any part of your acts, poses, plays and appearances of every kind and nature made or done by you … all instrumental, musical or sound effects produced by you (that presumably included his distinctive exhortations of “Hey!” and other famous James Brown exclamations), made or done by you in connection with the Performances and your services hereunder”, and the right to “exhibit, transmit, reproduce, distribute, broad cast and exploit … or the advertising or exploitation thereof, in and by all media and means whatsoever.”[11] The contract also gave the TAMI Show producers “the right to use and display, and to license others to use and display, your name and likeness for advertising or publicizing the Performance in conjunction with and so called ‘commercial tie-ups’”. Mr. Brown was paid the sum of $15,000.00 for these grants of rights. Mr. Brown contended that the 1964 letter agreement was ambiguous whether the grant of rights included the rights to use his performance in films, film promotions and videocassettes. He urged the court to focus on the phrase “in connection with”, and argued that it limits the producer’s rights to using his performance only in connection with the original TAMI Show itself, and not entirely separate contexts such as a full-length motion picture.[12] Mr. Brown submitted extrinsic evidence to support his interpretation of the contract language, which is allowed under California law, of industry practices requiring that consent of performers be obtained before film footage clips are used, and that other companies secured consent to use the TAMI Show footage. However, even under the permissive California standard, extrinsic evidence cannot be used to advance an interpretation to which the contract is not reasonably susceptible. The court stated that the language of the agreement expressly permitted the reproduction of a “portion” of the performance, indicating that the contracting parties contemplated the later use of the performance as segments of other larger projects.[13] The contract prohibited “commercial tie-ups” but this phrase was interpreted to mean Mr. Brown’s name and likeness could not be used for product endorsements, to which he had always been strictly opposed.[14] Finally, James Brown argued that the grant of rights did not encompass the right to the videocassette market, since it was not specified, nor was it even in existence at the time of the 1964 agreement. The court, in citing a number of cases litigating that question, found that the contract language did not limit the use of the performance to a specific medium, and quoted Rooney v. Columbia Pictures Indus., Inc.[15] : “[w]here a party has acquired a contractual right which may be fairly read as extending to a media developed thereafter, the other party may not escape that part of the agreement by showing that the specific nature of the new development was not foreseen.”
The scope of use, including geographic extent and duration, and kinds of rights desired (TV, film, DVD, online, etc) should always be carefully considered in a grant of rights. With the advent of films, television shows and even books being offered in digital form online[16] and on wireless devices such as smartphones and I Pads, questions persist about how to compensate copyright holders for their music and other works in previously released and new films and shows. In film studio contracts, the language has been changed to “all media excluding theatrical” (AMXT) for new films so negotiations do not have to occur with each new technology platform. In addition, many television show contracts are being amended to provide for rights in perpetuity, instead of the formerly standard five year option.[17]
The two “Godfather” cases illustrate the need in contract drafting to be able to anticipate things that don’t exist now and may not even seem possible – other than Dick Tracy and his two way wrist radio, who would have predicted fifty years ago the many devices we now use for two way audio and video communication? In licenses and contracts granting rights to intellectual property, nothing should be left to chance. Collateral rights such as trademarks may be created once money begins flowing from the original grant of rights, and enforcement of copyrights usually also depend on how much money is being made on the original works.
© 2012 Mary Ellen Tomazic
[1] Paramount Pictures Corporation v. Anthony Puzo, As Executor of the Estate of Mario Puzo, Civil Action No. 12 CIV 1268, United States District Court, Southern District of New York, Count 2.
[2] AFI’s 100 Years, 100 Movies, AFI.com (last visited 3/8/2012).
[3] Paramount v. Puzo, Count 30.
[4] “The Godfather’s Revenge”.
[6] 15 U.S.C. § 1114 and 15 U.S.C. § 1125(a).
[7] Paramount v. Puzo, Count 5.
[8] TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1202.08 (8th Edition 2011) available at tess2.uspto.gov/tmdb/tmep (last visited February 8, 2012).
[9] A footnote in the case quotes a statement in the complaint that “the plaintiff is known throughout the world as ‘The Godfather of Soul’, [and] alleges that he is one of the most influential living musicians in the world and is one of the greatest live performers of all time … and one of the original inductees into the Rock and Roll Hall of Fame”.
[10] 799 F.Supp. 166, 26 U.S.P.Q.2d 1626 (1992).
[11] Brown v. Twentieth Century Fox Film Corporation, 799 F.Supp 166, 26 U.S.P.Q.2d 1626 (1992).
[14] Id. at 171. Mr. Brown also lost his right of publicity claim in this case, as the court stated that “there is no allegation that plaintiff’s name or any aspect of his persona other than his appearance in the TAMI Show clip as it appears in the film was used by defendants to promote the product”. Id. at 172.
[15] 538 F.Supp. 211, 229 (S.D.N.Y.), aff’d without op., 714 F.2d 117 (2d Cir.1982), cert. denied 460 U.S. 1084, 103 S.Ct. 1774, 76 L.Ed.2d 346 (1983).
[16] For example, current television shows and movies are now offered for a monthly subscription fee on live streaming platforms such as Hulu and Netflix; millions of books are available for downloading to several types of “e-readers”.
[17] Melinda Newman, I Want My Mobile TV, Billboard, July 8, 2006, at 32.
